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Oracle v. Google: How Can Your Protect APIs?Dallas Bar AssociationComputer Law SectionOctober 22, 2012

Marc A. HubbardHubbard Law PLLCmhubbard@hubbardip.com

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Agenda

• Java API and Android API and issues involved in Oracle v. Google

• Basic copyright issues

• Rationale of decision by court on issue of copyrightability of Java API

• Legal and business ramifications

• Other modes of protection

• Effect on protecting APIs as well as class names, file formats, protocols and other types of specifications

• Business ramifications for the computer industry, open source initiatives,and the adoption of standards.

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Lawsuit• Early 2010: Oracle acquired Sun Microsystem and Sun’s interest in Java

• Late 2010: Oracle sued Google, accusing Google’s Android operating system of —

• Infringing copyright in Java API

• Patent infringement

• Trial in two phases in 2012:

• Copyright — Java API presumed to be copyrightable; jury found infringement and no fair use

• Patent - Jury found no infringement

• Court issued order after trial, on May 31, finding that Java API not copyrightable

• Oracle has filed notice of appeal

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What is “Java”?• It’s an object-oriented programming language based on C and C++ that can be used to write source code for

compiling into a platform independent object code called “bytecode”

• It’s a software “platform” that allows creation of applications that for “write once, run anywhere”

• A “virtual machine” (one for each OS/hardware platform) (“JVM”)

• Interprets (executes) applications written in Java

• Provides the abstraction layer necessary to achieve platform independence for applications

• An extensible application programming interface (API)

• Comprised of multiple libraries, referred to as “packages,” of previously written software (classes and interfaces) that provide “core” functions that can be called by applications in written Java and running on a Java virtual machine

• Very helpful to application programmers; some are arguably necessary for many functions because of hardware-dependency of the implementation

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Object oriented programming Java style

• A function that can be called by an application is referred to as a “method”

• Each method must be a member of a “class”

• Every Java program must have one class with one method

• A class may implement more than one method

• Classes may be grouped into “packages”

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Java API classes written using Java

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package java.lang;

public class Math {

public static int max (int x, int y) {

if (x > y) return x ;

else return y ;

}

}

Declares package “java.lang”Declares class “java.lang.math”Declares method “java.lang.math.max”

int a = java.lang.Math.max (2, 3);

Body of method

Simplified example of package, class, method within API

Part of body of method in class file of an application calling method

Calling method “max” with arguments “2” and “3”

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Java class file example

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public class Bicycle { // the Bicycle class has // three fields public int cadence; public int gear; public int speed; // the Bicycle class has // one constructor public Bicycle(int startCadence, int startSpeed, int startGear) { gear = startGear; cadence = startCadence; speed = startSpeed; } // the Bicycle class has // four methods public void setCadence(int newValue) { cadence = newValue; } public void setGear(int newValue) { gear = newValue; } public void applyBrake(int decrement) { speed -= decrement; } public void speedUp(int increment) { speed += increment; } }

Declaration of the class and start of body of class

Declaration of methodBody of Method

Declaration of data fields and their types for the class

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Java API

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• In 1996, at the time Java was introduced, API had 8 packages

• 3 packages were “core,” meaning must have these three to be able to write applications using Java (java.lang, java.io, java.util)

• Sun and Java Community Process developed standard specifications for Java classes and methods and added many more packages, classes and methods

• By 2008, API had 166 packages, containing over 600 classes with over 6000 methods

• Copyright in API registered as a single work

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What is “Android”?

• A complete software stack for mobile devices that is open source and without license fees

• Application programs are written in Java

• Allows large number of programmers already familiar with writing in Java to also write for Android

• Android includes a virtual machine that is used to to interpret Java bytecode (.class or .jar file) that has been modified (into a “.dex” file) to run on a virtual machine that is part of OS called the Dalvick virtual machine

• Android Includes a library written in Java that implements 37 of Java’s 166 packages

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Android System Architecture

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Google’s version of the Java virtual machine specially tuned for mobile environment

API of core packages

Blue = written in Java

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Points of similarity between 37 packages implementing Android API and Java API

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• Functions that are available, including inputs and outputs

• Names of packages, classes, methods, and arguments generally identical (for convenience of application developers)

• Arrangement of the methods into classes, and the arrangement of classes into packages

• Declaration statements for packages, classes and methods

• Formats for declarations, etc., dictated by Java programming language

• “Throw” statements largely similar

• Standard terms dictated by Java programming language (e.g. “public,” “private,” “static”) and the types of values (e.g. “int”, “boolean,” “char,” and “string”)

• Calls to methods (which much follow prescribed form)

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Points of dissimilarity

• Instructions that implement the method — the body of the methods

• NET RESULT

• 3% of the lines in the 37 packages of the Android API are identical to Java API

• 97% of the lines are dissimilar

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Business background

• Sun sued Microsoft in 1997 for breach of a licensing agreement because of incompatible version of Java VM that allowed developers to take advantage of Windows features.

• Microsoft referred to its version of the VM as “Java”, which seemed to be the primary point of contention

• Sun wanted Google to pay a big license fee to call its phone a Java phone, and join Nokia, Motorola, Blackberry (RIM) and others in developing apps that run across all the platforms.

• Java licensing was a $100 million plus business for Sun

• Sun would also profit by enlarging the Java community and creating more of a barrier to competition with Microsoft, et al.

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Google’s position

• As long as it is not referring using the “Java” trademark, or implying that it’s platform was “Java” or fully compliant with the Java specifications, it was free to build a VM that could run programs written in Java unless there was a patent.

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Oracle’s purported concern

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• “Fragmentation” / Balkanization of platforms

• Imperfect interoperability among platforms means that Java applications will not run on incompatible platforms.

• Java applications relying on unsupported packages will not run on Android

• Licensing requirements avoid fragmentation problems

• Questions: if fragmentation was really the issue, would Oracle have sued Google if it has implemented all 166 of the Java API packages?

• There were any number of ways to organize functions of the API into classes, the classes into packages, and to name the various classes and packages, and there was a signficant amount of expression involved in the particular API.

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Fairness issue

• Is it fair to allow Google to gain the benefit of the Java ecosystem without paying for the privilege of using it, or at least contributing to it?

• Subject to patent rights, Google or anyone else to could have created a virtual machine and an API offering the same set of functionality, but with different names for the packages, classes and methods

• Google obviously wanted the advantages of Java without abide by the restrictions imposed by Sun or Oracle

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Fundamental legal principles guiding decisions as formulated by district court

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• There is no decision directly on point; no court has ever decided the issue of whether a computer API was protectable by copyright.

• Under 17 U.S.C. §102(b), copyright protection never extends to any idea, procedure, process, system, method of operation or concepts regardless of the form. (The idea/expression dichotomy)

• Functional elements essential for interoperability are not copyrightable.

• Under the merger doctrine, when there is only one or just a few ways to express something, no one can claim ownership of such expression by copyright.

• Under the names doctrine, names and short phrases are not copyrightable.

• Court should not yield to temptation to find copyrightability merely to reward an investment in a body of intellectual property.

• “Sweat of the brow” doctrine rejected in U.S. Supreme Court in Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991).

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Origin of idea / expression dichotomy and merger doctrine

• Baker v. Seldon, 101 U.S. 99 (1879)

• Book on new system of double-entry accounting, which included blank form; infringer made use of method of bookkeeping, but used different forms.

• And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

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Idea / expression dichotomy as codified in 1976 Copyright Act

However, the Copyright Act does not contain explicit standards for separating ideas from expression.

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Merger doctrine rationale

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• Where idea and expression are intertwined and where non-protectable ideas predominate, copyright protection does not exist because granting protection to the expressive component necessarily would extend protection to the work’s uncopyrightable ideas as well.

• The merger doctrine is applied as a prophylactic device to ensure that courts do not unwittingly grant protection to an idea by granting exclusive rights to the only, or one of only a few, means of expressing that idea.

• See Gates Rubber Co. v. Bando Chemical Indus., Ltd., 9 F.3d 823 (10th Cir. 1993); Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004); ; Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film Corp., 361 F.3d 312 (6th Cir. 2004); Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-607 (1st Cir. 1988); Apple Computer, Inc. v. Microsoft Corp., 799 F.Supp. 1006 (N.D.Cal. 1992).

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Names and short phrases not protectable

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§ 202.1Material not subject to copyright.

The following are examples of works not subject to copyright and applications for registration of such works cannot be entertained:

(a) Words and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents;

Rule followed in 9th Circuit. Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992), (a competitor’s use of Sega’s initialization code, consisting of merely of 20 bytes of initialization code plus the letters S-E-G-A, was of de minimis length and therefore likely a “word” or “short phrase” that is not protected)

Copyright Office regulation 37 C.F.R. 202.1(a)

Most other circuits appear to have accepted this regulation as a fair statement of the law

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Disfavor of “structure, sequence and organization” theory

• Court acknowledged that non-literal elements of computer software — “structure, sequence and organization” — can by protected by copyright

• Whelan Associates, Inc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986) (structure of program for managing a dental office was copyrightable because there were many different ways to structure a program to manage a dental laboratory)

• Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir. 1989)(affirming under abuse of discretion standard finding that SSO of program was protectable expression on grounds that there was evidence that there was room for creativity in expression of functions.)

• But court noted that SSO type of analysis had become disfavored in 9th circuit and other circuits, had been heavily criticized, and failed to recognize the danger of conferring monopoly by copyright over Congress had expressly warned should only be granted by patent. See Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)

• Whelan and Johnson Controls: “Too narrow a view of the ‘idea’”

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Court favors abstraction, filtration and comparison analysis

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• Originally developed in the Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693 (2nd Cir. 1992) as an aid to analyze to distinguish between unprotectable ideas and protectable expression when comparing software programs for substantially similarity.

• (1) Dissect program according to its varying levels of generality to provide a framework

• (2) Examine each level of generality or abstraction in order to filter out those elements of the program which are unprotectable.

• (3) Compare of the remaining protectable elements with the allegedly infringing work to determine whether the defendants have misappropriated substantial elements of the plaintiff’s work.

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Filtration of unprotectable elements

• (1) Structure based on “practical considerations”

• (2) Structures dictated by external factors

• “standard techniques”

• Extrinsic considerations such a computer hardware, compatibility requirements with other programs, demands of industry being serviced, widely accepted programming practices, hardware standards, software standards, mechanical specifications

• Scènes à faire doctrine

• (3) Structures already found in public domain

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Court concerned that SSO is domain of patents

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• Catchwords, catchphrases, mottoes, slogans, or shortadvertising expressions.

• Listings of ingredients, as in recipes, labels, or formulas. When a recipe or formula is accompanied by anexplanation or directions, the text directions may becopyrightable, but the recipe or formula itself remainsuncopyrightable.

U.S. Copyright Office, Circular 34; see 37 C.F.R. 202.1(a).

This rule is followed in the Ninth Circuit. Sega Enters., Ltd. v. Accolade, Inc., 977 F.2d

1510, 1524 n.7 (9th Cir. 1992). This has relevance to Oracle’s claim of copyright ownership

over names of methods, classes and packages.

2. THE DEVELOPMENT OF LAW ON THE COPYRIGHTABILITY OF COMPUTER PROGRAMS AND THEIR STRUCTURE, SEQUENCE AND ORGANIZATION.

Turning now to the more difficult question, this trial showcases a distinction between

copyright protection and patent protection. It is an important distinction, for copyright

exclusivity lasts 95 years whereas patent exclusivity lasts twenty years. And, the Patent and

Trademark Office examines applications for anticipation and obviousness before allowance

whereas the Copyright Office does not. This distinction looms large where, as here, the vast

majority of the code was not copied and the copyright owner must resort to alleging that the

accused stole the “structure, sequence and organization” of the work. This phrase — structure,

sequence and organization — does not appear in the Act or its legislative history. It is a phrase

that crept into use to describe a residual property right where literal copying was absent.

A question then arises whether the copyright holder is more appropriately asserting an exclusive

right to a functional system, process, or method of operation that belongs in the realm of patents,

not copyrights.

A. Baker v. Seldon.

The general question predates computers. In the Supreme Court’s decision in Baker v.

Seldon, 101 U.S. 99 (1879), the work at issue was a book on a new system of double-entry

bookkeeping. It included blank forms, consisting of ruled lines, and headings, illustrating the

Case3:10-cv-03561-WHA Document1202 Filed05/31/12 Page15 of 41

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Holding 1: Specification for each method is an idea

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• “The method specification was the idea. The method implementation is the expression.”

• Google used its own code to implement method specification, including inputs, outputs, etc.

• Names of individual methods, classes and packages not protectable

• The declarations, save for the argument names, dictated by rules of Java (external considerations and interoperability)

• As long as the specific code written to implement a method is different, anyone is free under the Copyright Act to write his or her own method to carry out exactly the same function or specification of any and all methods used in the Java API. Ideas, functions and concepts cannot be “monopolized” by copyright.

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Holding 2: overall system of organization of methods not protectable

• Arrangement of methods into classes, and classes into packages involved creativity and resembles a taxonomy, but it is nevertheless a command structure or system or method of operation.

• Because the use of the same taxonomy or command structure was necessary to achieve interoperability, it has to be a method of operation

• Google replicated what was necessary, but not more than necessary, to achieve interoperability.

• Oracle’s fears of fragmentation and imperfect interoperability arising from incomplete implementation of API tends to confirm that it is a method of operation

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Implications• It is the first decision to address squarely issue of protectability of specification of computer API

• Will have to see how the appellate court reacts.

• This is not a holding that all APIs cannot be protected by copyright. However, it is difficult to imagine when an API would be copyrightable. If copying of elements necessary to achieve interoperability or compatability will always be permitted, APIs will not likely ever be found to be protectable by copyright.

• If decision is upheld on appeal, the only real legal limits on third parties recreating a software or hardware “platform” will be:

• Contractual limitations

• Patents

• Secrecy

• Trademarks

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Oracle/Sun failed at protecting Java API with patents

• Infringement of 7 patents plead

• Infringement claims with respect to 2 survived until trial and jury found no infringement

• Patents had little, if anything, to do with the Java API or its implementation

• Not so easy to obtain patents on method of operation of an API or to make a claim of infringement stick

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Feasibility of protecting API with patents

• API software specifications, as such, are abstract

• Patent must claim a process, a machine or article of manufacture

• Must look to patent processes essential to implementation of the API

• However, patent eligibility of computer implemented processes under scrutiny

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Patents on software implemented inventions

• Bilski v. Kappos, 130 S.Ct. 3218 (2010)

• Laws of nature, physical phenomena, and abstract ideas are not patentable

• CLS Bank v. Alice Corp. en banc rehearing ordered by the Federal Circuit (involves computer implemented financial business method):

• “What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea"; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

• “In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?”

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Invention / Practical application of idea Abstract idea Expression of idea

The abstraction chasm

§101 case law pushing fuzzy boundary one direction

Case law relating to copyrightability of program structures pushing fuzzy boundary the other direction

Method of operation, process, system

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Basic advice to clients developing an API or hardware or software “platform”

• Keep secret; avoid “open source” or “open standard;” self-help precautions

• Aggressive contractual and licensing provisions to keep API and other interfaces secret

• Patent all novel processes essential to implementing or supporting API specification

• If business model depends on “open” API or open standard, there may not much that can be done, other than create circumstances which favor inclusion rather than exclusion

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Basic advice to client wanting to develop interoperable software and hardware

• Avoid contracts with party who developed platform (watch for implied contracts associated with using specification)

• Evaluate patents

• Avoid confidentiality restrictions

• Avoid using trademarks

• Reverse engineer using clean room techniques that are consistent with current law

• Otherwise, have at it

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Open source and standards

• Generally viewed by the popular media and software programmers as good for open source; one less obstacle

• However, strong copyright protection is, arguably, essential to

• Enforcing licensing requirements in open source (e.g. contribution of derivatives, limits on commercial uses, etc)

• Less ability to control development and guard against splintering or forking in standards

• More difficulty in getting standards off the ground

• One less means to force cooperation among all of the players, and to encourage others to join

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Conclusions

• Court’s decision expresses a consistent theme found in cases, which is the concern over the extrinsic effects of extending copyright protection

• Specifications for an API, file format, etc. generally exist to achieve interoperability. If reasoning of this decision is followed, APIs are likely not to be protectable under copyright under rationale that they are methods of operation.

• Similarities in expression occurring within an implementation essential to implementation of a specification are likely not protectable under the merger or scènes à faire doctrines.

• Subject to misappropriation of trade secrets, contractual limitations, patents, and trademark rights, software and hardware platforms appear to be generally free for the taking

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Marc A. HubbardHubbard Law PLLC740 E. Campbell Road, Suite 550 | Richardson, TX 75081(214) 396-6001 direct(214) 208.2601 mobile(214) 785-6958 faxwww.hubbardip.com

© 2012 Marc A. Hubbard

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